by Dávid Szász
It has been a subject of debate between experts whether and under what conditions AI inventions can be patented. A recent ruling[1] of the UK High Court handed down by Sir Anthony Mann on 21 November 2023 concerning an appeal against a decision made by the UK Intellectual Property Office (UKIPO) decided to overturn the UKIPO’s application of the exclusion from patentability for “a program for a computer… as such”. Important to note is that the decision does not impact inventions generated by AI which is another consideration entirely. It is common ground that innovations made by an AI system are not subject to patent protections.[2] With an exception made by the South African Patent Office which has been the first patent office in the world to have granted a patent for an invention that was created by artificial intelligence.[3]
The patent concerned is an Artificial Neural Network (ANN) based system. ANN systems consist of several artificial neurons and a number of interconnections between them. Based on the structure of these connections we identify different classes of neural network architectures.[4] The hardware devices designed to realize ANN architectures are referred as Hardware Neural Networks (HNN), which are like pieces of hardware that can be bought off the shelf and which contain the nodes and layers in hardware. Most of the existing ANN applications in commercial use are developed as software, but there are specific applications which demand high volume adaptive real-time processing and learning of large datasets in reasonable time and necessitate the use of energy efficient HNN.[5]
The concerned ANN based AI system is said to be capable of offering suggestions of similar music in terms of human perception and emotion irrespective of the genre of music, and as such it organises music files in a different way than common search algorithms. The recommendations are provided to an end user by sending a file and message.
The main question of the case was whether the invention is excluded subject matter under the “program for a computer” exclusion of section 1(2)(c) of the Patents Act 1977. The UKIPO’s decision concluded that the system was "no more than a computer program" and the invention's contribution was "no more than a computer programming activity". Patent applicant Emotional Perception AI Ltd appealed this decision by arguing that the invention is not a computer program.
The appeal proved to be successful. Justice Anthony Mann noted that the concerned AI system – as it is ANN based - may be implemented in hardware as HNN, or in software in a computer emulation. Regarding the hardware implementations there is no program to which the program exclusion can apply, as a hardware ANN does not involve a program for a computer. In the context of AI based on hardware ANN, it is crucial to refer to the part of the decision which states that once the training process is deemed to be complete, the structure or the topology is then frozen.
What is of paramount significance to the legal assessment is the following.
At this point no activity which might be called programming activity takes place in relation to the ANN or the data. The data which is passed through the ANN is subjected solely to the processing provided by the ANN via its nodes. The state of these nodes is not determined by any human programming. In terms of how they each operate and pass on data, it is determined by the ANN itself, which learns by itself. In this case the AI system is based on a hardware ANN.
As for the software implementations it is crucial to look at it as, in essence, operating in the same way as the hardware ANN. The only computer program concerned in the process is which achieves the training, but the judgement states that what is special about the training process is not contained within that computer program. The program is only a subsidiary part of the claim. The Justice found that if the hardware ANN is not operating as a program, then neither is the emulated ANN. This results in, that the claimed invention is not a computer program, and the computer program exclusion is not invoked.[6]
The impact of the decision is significant, as it has caused the review of the old and the publishment of new guidelines by UKIPO, [7] all the while positioning the UK as an attractive jurisdiction for AI development. The new guidance - which is effective immediately - states that “patent examiners should not object to inventions involving an ANN under the program for a computer exclusion”. [8] Important to note is, that these inventions could still be objected based on other patentability exclusions.[9],[10]
The decision serves as a beacon of hope for potential applicants seeking protection for AI-implemented inventions, particularly those relating to Artificial Neural Networks.[11] From now on AI inventions involving ANNs should not be objected based solely on the computer program patentability exclusion.
[1] Case CH-2022-000144, Emotional Perception AI Ltd and Comptroller-General of Patents, Designs and Trade Marks, [2023] EWHC 2948 (Ch), 2023. 11. 21., https://www.bailii.org/ew/cases/EWHC/Ch/2023/2948.pdf (last accessed: 2023.12.13.).
[2] AI Business: In a First, UK High Court Rules AI Can Be Patented, 2023. 11. 29., https://aibusiness.com/responsible-ai/a-uk-high-court-just-ruled-ai-can-be-patented (last accessed: 2023.12.11.).
[3] Adams & Adams: South African Patent Office’s Recent Grant of a Patent for an Invention Created by Artificial Intelligence, 2021. 07. 30., https://www.adams.africa/intellectual-property/patents/south-african-patent-offices-recent-grant-of-a-patent-for-an-invention-created-by-artificial-intelligence/ (last accessed: 2023.12.11.).
[4] Liao Yihua: Neural Networks in Hardware: A Survey, https://bit.csc.lsu.edu/~jianhua/shiv2.pdf (last accessed: 2023.12.13.).
[5] Janardan Misra - Indranil Saha: Artificial Neural Networks in Hardware: A Survey of Two Decades of Progress, https://www.researchgate.net/profile/Janardan-Misra-2/publication/223938078_Artificial_neural_networks_in_hardware_A_survey_of_two_decades_of_progress/links/5b2be58a0f7e9b0df5ba4685/Artificial-neural-networks-in-hardware-A-survey-of-two-decades-of-progress.pdf (last accessed: 2023.12.13.).
[6] Osborne Clarke: UK High Court finds AI invention patentable, 2023. 11. 30., https://www.osborneclarke.com/insights/uk-high-court-finds-ai-invention-patentable (last accessed: 2023.12.11.).
[7] Osborne Clarke: UKIPO updates patent examination guidance after High Court AI patentability decision, 2023. 12. 11., https://www.osborneclarke.com/insights/ukipo-updates-patent-examination-guidance-after-high-court-ai-patentability-decision (last accessed: 2023.12.13.).
[8] See: Statutory guidance - Examination of patent applications involving artificial neural networks (ANN), https://www.gov.uk/government/publications/examination-of-patent-applications-involving-artificial-neural-networks/examination-of-patent-applications-involving-artificial-neural-networks-ann (last accessed: 2023.12.13.).
[9] For example: the mathematical method exclusion.
[10] See: Ref. 7.
[11] Secerna LLP: High Court Breakthrough: Overturning UKIPO Decision Opens Doors for AI Patentability, 2023. 12. 11., https://www.secerna.co.uk/insights/news/high-court-breakthrough-overturning-ukipo-decision-opens-doors-for-ai-patentability/ (last accessed: 2023.12.11.).
